Statement of Judiciary Committee Chairman Lamar Smith Full Committee Markup of H.R. 6215, a bill to amend the Federal Trademark Dilution Act

Statement of Judiciary Committee Chairman Lamar Smith
Full Committee Markup of
H.R. 6215, a bill to amend the Federal Trademark Dilution Act

Chairman Smith: The purpose of the Federal Trademark Dilution Act of 1995 is to protect famous trademarks from subsequent uses that blur the distinctiveness of the mark or tarnish or disparage it, even in the absence of a likelihood of confusion.

Dilution does not rely upon the standard test of infringement; that is, likelihood of confusion, deception or mistake.  Rather, it applies when the unauthorized use of a famous mark reduces the public’s perception that the mark signifies something unique, singular or particular. In other words, dilution can result in the loss of the mark’s distinctiveness and possibly the owner’s rights in it.

Congress enacted amendments to the original dilution statute in 2006.  Last year, two law professors discovered a technical problem with one of the 2006 changes. 

During Senate consideration of the House bill, the section that provides a federal registration defense to a dilution action was reorganized.  This produced an unexpected and unintended change to the law.

As originally drafted in the House, the provision was designed to encourage federal registration of trademarks.  This is a worthy policy goal that prevents state laws from interfering with federally-protected marks and ensures that registered marks are protected nationwide.  The House version promoted this goal and barred a state action for dilution against a federally-registered mark.

However, the Senate reformatted the House text in such a way as to create a bar against state action for dilution as well as a state or federal action based on a claim of actual or likely damage or harm to the distinctiveness or reputation of a mark.  This means the federal-registration defense is available to both state and federal dilution claims. 

Congress couldn’t have intended such an outcome. If all dilution claims, including federal claims, are barred by registration, it becomes difficult to cancel a diluting mark that is registered. This encourages illegitimate mark holders to register diluting marks, which forces legitimate mark holders to expend greater resources to monitor registrations as well as other marks being used in commerce. 

That is why we introduced H.R. 6215 to amend the Federal Trademark Dilution Act.  This bill simply reformats the affected provision to clarify that federal registration only constitutes a complete bar to a state claim based on dilution, or actual or likely damage or harm to the distinctiveness or reputation of a mark.  The change applies prospectively.

This bill ensures that the trademark community is protected from those who look to use this loophole as a way to disparage legitimate trademarks and cost their holders time and money.